CLAIM CONSTRUCTION ORDER CONSTRUING U.S. PATENT NOS. 5,157,391; 5,394,140; 5,848,356; 4,866,766; 7,070,349; and U.S. DESIGN PATENT NO.

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1 United States District Court, E.D. Texas, Texarkana Division. MOTOROLA, INC, Plaintiff. v. VTECH COMMUNICATIONS, INC., et al, Defendants. No. 5:07CV171 July 6, Damon Michael Young, John Michael Pickett, Lance Lee, Young Pickett & Lee, Texarkana, TX, Jesse J. Jenner, Ropes & Gray, Boston, MA, Kevin J. Post, Kristofer D. Cheney, Megan F. Raymond, Nicole M. Jantzi, Ropes & Gray, Washington, DC, Steven Pepe, Ropes & Gray, New York, NY, for Plaintiff. Darby Vincent Doan, James N. Haltom, Morgan Day Vaughan, Haltom and Doan, Texarkana, TX, Andrew B. Karp, Christopher V. Carani, Daniel Steven Stringfield, Gregory C. Schodde, James R. Nuttall, Timothy J. Malloy, William B. Gont, McAndrews Held & Malloy, Richard E. Dick, Wood Phillips Katz Clark & Mortimer, Chicago, IL, for Defendants. CLAIM CONSTRUCTION ORDER CONSTRUING U.S. PATENT NOS. 5,157,391; 5,394,140; 5,848,356; 4,866,766; 7,070,349; and U.S. DESIGN PATENT NO. D559,842 CAROLINE M. CRAVEN, United States Magistrate Judge. This Opinion construes terms in U.S. Patent Nos. 5,157,391 ("the '391 patent"), 5,394,140 ("the '140 patent"), 5,848,356 ("the '356 patent"), 4,866,766 ("the '766 patent") (collectively the "user-interface patents") as well as terms in U.S. Patent No. 7,070,349 ("the '349 patent") and U.S. Design Patent No. D559,842 ("the '842 patent") (collectively "the keypad patents"). Plaintiff Motorola, Inc. ("Plaintiff" or "Motorola") brings this cause of action against VTech Communications, Inc. and VTech Telecommunications, Ltd. (collectively "Defendants" or "VTech"), alleging Defendants infringe the patentsin-suit. I. Background A. Summary of the invention Motorola has asserted infringement of the following claims of the patents in suit: (1)1 and 2 of the '766

2 patent; (2) 1 and 5 of the '391 patent; (3) 1-3 and of the '140 patent; (4) 1 of the '356 patent; (5) 6 of the '349 patent; and (6) the claim of the '842 patent. Two of the patents-in-suit (the "keypad" patents) are directed to a distinctive telephone keypad structure and design. The remaining four patents (the "userinterface" patents) are directed to features and functionality that may be incorporated into a communication device such as a telephone to simplify and enhance a user's experience. These patents are briefly described below, as taken from Motorola's brief. B. The "Keypad" Patents The first set of patents (the '349 utility patent and the '842 design patent) relate to a super-thin keypad for electronic devices. This technology has been incorporated into such products as Motorola "Razr" v3 cellular phone. The '349 utility patent discloses a keypad that includes key caps flexibly interconnected via narrow strips of material called "carrier portions." The keypad also includes a flexible web on the backside of the key caps. Motorola asserts this keypad assembly provides a significant advance in electronics keypads, allowing for an extremely thin device. The '842 design patent is a continuation of the application that ultimately issued as the '349 utility patent. This design patent claims the ornamental arrangement of the keypad key caps, including their relative positions. Motorola asserts that VTech's 6042 cordless telephone includes a handset with a keypad that infringes the '349 and '842 patents. C. The "User-Interface" Patents The remaining four patents disclose user-interface inventions that allegedly improve a communication device's functionality. The '766 patent, for example, discloses an apparatus for programming a custom telephone ring using the telephone's keypad, where each key corresponds to a different parameter of a ring (e.g., tone, frequency, delay, etc.). The '766 patent calls these "user-coded ring parameters." The '391 patent discloses a method and apparatus for a communication device that has a menu driven display to access more than one function for a particular key on a keypad by displaying certain visual indicators on the device display. These visual indicators ("function indicators") can change based on the device's mode, thus allowing one key to have more than one function. This simplifies the keypad and enhances user functionality without a need to memorize codes. The '140 patent describes a method and apparatus for a communication receiver for displaying a call-back number and generating a unique and/or default audible alert ( e.g., a ring) associated with the number. The number is pre-stored in the phone's memory, such that when a communication with the same phone number is received and recognized, the associated "special" alert will be generated by the device. Moreover, if a received phone number does not match a phone number stored in memory, a default alert is generated. Finally, the '356 patent discloses a method in a communication device for storing a phone number or service associating it with a graphical icon in a radio communication device such as a phone. For example, a user may enter a phone number ( e.g., a home number) and then select a specific pre-stored image ( e.g., a house) to associate with it. This information is stored together in the phone's memory. D. Procedural Background of the Current Proceeding The parties filed claim construction briefs and respective responses thereto, and on October 2, 2008, the

3 Court held a claim construction hearing. After considering the parties' submissions, arguments of counsel, and all other relevant pleadings and papers, the Court finds that the claims of the patents should be construed as set forth herein. II. The Legal Principles of Claim Construction A determination of patent infringement involves two steps. First, the patent claims are construed, and, second, the claims are compared to the allegedly infringing device. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1455 (Fed.Cir.1998) ( en banc ). The claims of a patent define the invention to which the patentee is entitled the right to exclude." Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) ( en banc ). In claim construction, courts examine the patent's intrinsic evidence to define the patented invention's scope. CR. Bard, Inc. v. U.S. Surgical Corp., 388 F.3d 858, 861 (Fed.Cir.2004); Bell Atl. Network Servs., Inc. v. Covad Commc'ns Group, Inc., 262 F.3d 1258, 1267 (Fed.Cir.2001). The legal principles of claim construction were recently examined by the Federal Circuit in Phillips v. AWH Corp., 415 F.3d 1303 (Fed.Cir.2005) ( en banc ). Reversing a judgment of non-infringement, an en banc pan el specifically identified the question before it as: "the extent to which [the court] should resort to and rely on a patent's specification in seeking to ascertain the proper scope of its claims." Id. at Addressing this question, the Federal Circuit specifically focused on the confusion that had amassed from its scattered decisions on the weight afforded dictionaries and related extrinsic evidence as compared to the intrinsic record. Ultimately, the court found that the specification, "informed, as needed, by the prosecution history," is the "best source for understanding a technical term." Id. at 1315 ( quoting Multiform Dessicants, Inc. v. Medzam, Ltd., 133 F.3d 1473, 1478 (Fed.Cir.1998). However, the court was mindful of its decision and quick to point out that Phillips is not the swan song of extrinsic evidence, stating: [W]e recognized that there is no magic formula or catechism for conducting claim construction. Nor is the court barred from considering any particular sources or required to analyze sources in any specific sequence, as long as those sources are not used to contradict claim meaning that is unambiguous in light of the intrinsic evidence. Phillips, 415 F.3d at Consequently, this Court's reading of Phillips is that the Federal Circuit has returned to the state of the law prior to its decision in Texas Digital Sys. v. Telegenix, Inc., 308 F.3d 1193 (Fed.Cir.2002), allotting far greater deference to the intrinsic record than to extrinsic evidence. "[E]xtrinsic evidence cannot be used to vary the meaning of the claims as understood based on a reading of the intrinsic record." Phillips, 415 F.3d at Additionally, the Federal Circuit in Phillips expressly reaffirmed the principles of claim construction as set forth in Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed.Cir.1995) ( en banc ), aff'd, 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996), Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed.Cir.1996), and Innova/Pure Water, Inc. v. Safari Water Filtration Systems, Inc., 381 F.3d 1111 (Fed.Cir.2004). Thus, the claim-construction principles taught by these cases remain in force. Claim construction is a question for the court. Markman, 52 F.3d at 979. The claims of a patent define that which "the patentee is entitled the right to exclude." Innova, 381 F.3d at And the claims are "generally given their ordinary and customary meaning" as the term would mean "to a person of ordinary skill in the art in

4 question at the time of the invention, i.e., as of the effective filing date of the patent application." Vitronics, 90 F.3d at However, the Federal Circuit stressed the importance of recognizing that the person of ordinary skill in the art "is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the context of the entire patent, including the specification." Phillips, 415 F.3d at Advancing the emphasis on the intrinsic evidence, the Phillips decision explains how each source, the claims, the specification as a whole, and the prosecution history, should be used by courts in determining how a skilled artisan would understand the disputed claim term. See, generally, id. at The court noted that the claims themselves can provide substantial guidance, particularly through claim differentiation. Using an example taken from the claim language at issue in Phillips, the Federal Circuit observed that "the claim in this case refers to 'steel baffles,' which strongly implies that the term 'baffles' does not inherently mean objects made of steel." Id. at Thus, the "context in which a term is used in the asserted claim can often illuminate the meaning of the same term in other claims." Id. Likewise, other claims of the asserted patent can be enlightening, for example, "the presence of a dependent claim that adds a particular limitation gives rise to a presumption that the limitation in question is not present in the independent claim." Id. at 1315 ( citing Liebel-Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 910 (Fed.Cir.2004)). Still, the claims "must be read in view of the specification, of which they are part." Markman, 52 F.3d at 978. In Phillips, the Federal Circuit reiterated the importance of the specification, noting that "the specification 'is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.' " 415 F.3d at 1315 ( quoting Vitronics, 90 F.3d at 1582). To emphasize this position, the Phillips court cites extensive case law, as well as "the statutory directive that the inventor provide a 'full' and 'exact' description of the claimed invention." Id. at 1316 ( citing Merck & Co. v. Teva Pharms. USA, Inc., 347 F.3d 1367, 1371 (Fed.Cir.2003)); see also 35 U.S.C. s. 112, para. 1. Consistent with these principles, the court reaffirmed that an inventor's own lexicography and any express disavowal of claim scope is dispositive. Id. at Concluding this point, the court noted the consistency with this approach and the issuance of a patent from the Patent and Trademark Office and found that "[i]t is therefore entirely appropriate for a court, when conducting claim construction, to rely heavily on the written description for guidance as to the meaning of the claims." Id. at Additionally, the Phillips decision provides a terse explanation of the prosecution history's utility in construing claim terms. The court simply reaffirmed that "the prosecution history can often inform the meaning of the claim language by demonstrating how the inventor understood the invention and whether the inventor limited the invention in the course of prosecution, making the claim scope narrower than it would otherwise be." Id. ( citing Vitronics, 90 F.3d at ). It is a significant source for evidencing how the patent office and the inventor understood the invention. Id. Finally, the Federal Circuit curtailed the role of extrinsic evidence in construing claims. In pointing out the less reliable nature of extrinsic evidence, the court reasoned that such evidence 1) is by definition not part of the patent, 2) does not necessarily reflect the views or understanding of a person of ordinary skill in the relevant art, 3) is often produced specifically for litigation, 4) is far reaching to the extent that it may encompass several views, and 5) may distort the true meaning intended by the inventor. See id. at Consequently, the Federal Circuit expressly disclaimed the approach taken in Texas Digital. While noting the Texas Digital court's concern with regard to importing limitations from the written description-"one of the cardinal sins of patent law," the Federal Circuit held that "the methodology it adopted placed too much reliance on extrinsic sources such as dictionaries, treatises, and encyclopedias and too little on intrinsic

5 sources, in particular the specification and prosecution history." Id. at Thus, the court renewed its emphasis on the specification's role in claim construction. Many other principles of claim construction, though not addressed in Phillips, remain significant in guiding this Court's charge in claim construction. The Court is mindful that there is a "heavy presumption" in favor of construing claim language as it would be plainly understood by one of ordinary skill in the art. Johnson Worldwide Assocs., Inc. v. Zebco Corp., 175 F.3d 985, 989 (Fed.Cir.1999); cf. Altiris, Inc., v. Symantec Corp., 318 F.3d 1364, 1372 (Fed.Cir.2003) ("[S]imply because a phrase as a whole lacks a common meaning does not compel a court to abandon its quest for a common meaning and disregard the established meaning of the individual words."). The same terms in related patents are presumed to carry the same meaning. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1334 (Fed.Cir.2003) ("We presume, unless otherwise compelled, that the same claim term in the same patent or related patents carries the same construed meaning.") "Consistent use" of a claim term throughout the specification and prosecution history provides "context" that may be highly probative of meaning and may counsel against "[b]roadening of the ordinary meaning of a term in the absence of support in the intrinsic record indicating that such a broad meaning was intended..." Nystrom v. TREX Co., 424 F.3d 1136, (Fed.Cir.2005). Claim construction is not meant to change the scope of the claims but only to clarify their meaning. Embrex, Inc. v. Serv. Eng'g Corp., 216 F.3d 1343, 1347 (Fed.Cir.2000) ("In claim construction the words of the claims are construed independent of the accused product, in light of the specification, the prosecution history, and the prior art... The construction of claims is simply a way of elaborating the normally terse claim language[ ] in order to understand and explain, but not to change, the scope of the claims.") (citations and internal quotations omitted). Regarding claim scope, the transitional term "comprising," when used in claims, is inclusive or open-ended and "does not exclude additional, unrecited elements or method steps." CollegeNet, Inc. v. Apply Yourself, Inc., 418 F.3d 1225, 1235 (Fed.Cir.2005) (citations omitted). Claim constructions that read out a preferred embodiment are rarely, if ever, correct. Vitronics, 90 F.3d at Another consideration in claim construction is prosecution disclaimer which is typically invoked to limit the meaning of a claim term that would otherwise be read more broadly. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.Cir.2003) ("[W]here the patentee has unequivocally disavowed a certain meaning to obtain his patent, the doctrine of prosecution disclaimer attaches and narrows the ordinary meaning of the claim congruent with the scope of the surrender."). "[F]or prosecution disclaimer to attach, our precedent requires that the alleged disavowing actions or statements made during prosecution be both clear and unmistakable." Id. at The Federal Circuit has "declined to apply the doctrine of prosecution disclaimer where the alleged disavowal of claim scope is ambiguous." Id. at A patentee may set out the elements of a claim in a so-called means-plus-function format. 35 U.S.C. s. 112, para. 6. The patentee may recite in the claim a "means for" achieving a certain function. In exchange for this convenience in claim drafting, the patentee must disclose corresponding structure in the specification. O.I. Corp. v. Tekmar Co., 115 F.3d 1576, 1583 (Fed.Cir.1997). If the patentee fails to provide corresponding structure sufficient to enable a person of ordinary skill in the art to make and use the invention, then the claim is invalid. See 35 U.S.C. s. 112, para. 1. If the patentee provides sufficient corresponding structure, then the claim scope encompasses that structure "and its equivalents." Id. at s. 112, para. 6; see also Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1298 (Fed.Cir.2005). A corresponding structure need not enable the claimed invention, rather it need only "include all structure that actually performs the recited function." Default Proof Credit Card Sys., 412 F.3d at A structure disclosed is only a "corresponding structure" if the "specification or prosecution history clearly links or associates that

6 structure to the function recited in the claim." Med. Instrumentation & Diagnostics Corp. v. Elekta, 344 F.3d 1205, 1210 (Fed.Cir.2003). Accused devices employing the same or equivalent structure will be found to literally infringe the claim. WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1350 (Fed.Cir.1999) (noting that "to establish literal infringement of a means-plus-function claim, the patentee must establish that the accused device employs structure identical or equivalent to the structure disclosed in the patent and that the accused device performs the identical function specified in the claim"). While claim construction is a matter for the Court, it need not provide a new definition or rewrite a term, particularly when the Court finds the term's plain and ordinary meaning is sufficient. The Federal Circuit recently addressed this issue in O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed.Cir.2008). In O2 Micro, the Federal Circuit considered the term "only if" in independent claim 1 which requires "a DC/AC converter circuit comprising: a feedback control loop circuit... adapted to generate a second pulse signal... only if said feedback signal is above a predetermined threshold." Id. at The defendant asserted that its controllers did not satisfy the limitation of claim one because there were circumstances where the feedback signal controlled power to the load "even though the feedback signal falls below the predetermined threshold." Id. Two defendants had asked the district court to construe the term "only if" to mean "exclusively or solely in the event that," another defendant argued the term to mean "never except when," and the plaintiff argued that no construction was needed. Id. at The district court had noted that there was a dispute as to whether "only if" would have an exception but chose to rule that the term needed no construction. Id. The Federal Circuit noted that "[a]t trial, the 'only if' limitation was a key issue disputed by the parties." Id. at The Federal Circuit stated that the "purpose of claim construction is to 'determin[e] the meaning and scope of the patent claims asserted to be infringed." Id. at 1360 ( citing Markman v. Westview Instruments, Inc., 52 F.3d 967, 976 (Fed.Cir.1995) (en banc)). The Federal Circuit clarified that "[w]hen the parties raise an actual dispute regarding the proper scope of these claims, the court, not the jury, must resolve that dispute." Id. ( citing Markman, 52 F.3d at 979). The primary dispute, as acknowledged by the district court, was whether the "only if" limitation applied during the "the steady state operation of the switching circuit" or at all times without exception. Id. at The Federal Circuit noted that the parties had agreed to the "meaning" of the term but not to the claim's "scope." Id. at The Federal Circuit stated that "[a] determination that a claim term 'needs no construction' or has the 'plain and ordinary meaning' may be inadequate when a term has more than one 'ordinary' meaning or when reliance on a term's 'ordinary' meaning does not resolve the parties' dispute." Id. The Federal Circuit found that the district court's failure to construe "only if" effectively allowed the jury to construe the term. Id. at The Federal Circuit also recognized, however, that "district courts are not (and should not be) required to construe every limitation present in a patent's asserted claims." Id. (emphasis in original) ( citing Biotec Biologische Naturverpackungen GmbH & Co. KG v. Biocorp, Inc., 249 F.3d 1341, 1349 (Fed.Cir.2001); U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1568 (Fed.Cir.1997)). As explained by one district court, there is a heavy presumption that a claim term carries its ordinary meaning. Bd. of Trustees of the Leland Stanford Junior University v. Roche Molecular Sys., 2007 U.S. Dist. LEXIS 87219, at *19, 2007 WL (N.D.Cal. Nov. 27, 2007) ( citing Phillips, 415 F.3d at 1314). The court further explained that some terms, such as "therapeutically effective," are commonplace terms that a juror could understand without further direction from the court. Id. The court found that the terms "do not need to be construed because they are neither unfamiliar to the jury, confusing to the jury, nor affected by the specification or prosecution history." Id. at *19-*20 ( citing Ethicon, 103 F.3d at 1568 ("Claim construction is a matter of resolution of disputed meanings and technical scope, to clarify and when

7 necessary to explain what the patentee covered by the claims, for use in the determination of infringement. It is not an obligatory exercise in redundancy.")). However, the Federal Circuit held that "[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court's duty to resolve it." O2 Micro, 521 F.3d at The Court concludes that when two parties offer different constructions, or if one side argues for ordinary meaning, then the Court must first determine whether it has a duty to resolve the meaning and the scope. While it is a district court's duty is to construe the claims, part of this duty is to determine the extent which to construction is even necessary. With regard to meaning, where additional language may be unduly limiting, confusing, or redundant, it is in a court's power to determine that no construction is necessary. A court may decline to adopt constructions that violate claim construction doctrine, such as improperly importing limitations, and may still construe terms to have their ordinary meaning. See id. at Guided by these principles of claim construction, this Court directs its attention to the patents-in-suit and the disputed claim terms. III. Claim Construction Background A. Background As required by the Court's Amended Docket Control Order, on May 5, 2008, the parties exchanged lists of terms requiring construction. VTech proposed forty-nine terms; Motorola proposed twenty-six. The parties reduced the number of terms in dispute to twenty-four, and on June 20, 2008, the parties filed a Joint Claim Construction and Pre-Hearing Statement that provided their respective constructions for those twenty-four disputed terms and phrases. B. The Disputed Claim Terms On July 25, 2008, the parties filed an Amended Joint Claim Construction and Pre-Hearing Statement, requesting construction of the following 24 limitations or phrases: (1) U.S. Patent No. 4,866,766 ("processing means...," "a keypad for both dialing out and programming said ringer" and "ring generator means..."); (2) U.S. Patent No. 5,157,391 ("selective call receiver," "message read mode," "selective call receiver status mode," and "message"); (3) U.S. Patent No. 5,394,140 ("user-programmed special audible alert," "user-programmed default audible alert," "receiver means...," "storage means...," "processor means...," "user control means...," "communication receiver," "audible alert generation means...," "first processor element...," and "received call-back number"); (4) U.S. Patent No. 5,848,356 ("graphical icon" and "storing said telephone number and said first graphical icon together in memory"); (5) U.S. Patent No. 7,070,349 ("carrier portion interconnecting the plurality of user interface key caps," "flexible web," "interconnecting," and "flexibly coupled to the carrier portion"); and (6) U.S. Design Patent No. D559,842 ("the ornamental design for a keypad, substantially as shown and described"). C. The Undisputed Claim Terms 1. The '349 Patent

8 The parties have agreed on the construction of the following claim terms. From the '349 Patent, the parties agree "a plurality of user interface key caps" should be construed as "more than one key cap that can be depressed by a user." The parties agree "plurality of user interface carrier portion" should be construed as "more than one key cap that can be depressed by a user." The parties agree "unitary member" should be construed as "formed of the same piece of material to form a unit." 2. The '391 Weitzen Patent From the '391 Patent, the parties agree a "method of presenting plurality of function indicators in a selective call receiver capable of receiving a message" should be construed as a "method for presenting function indicators in a selective call receiver capable of receiving messages. A function indicator on the display of the selective call receiver representing a 'function action' that may be selected by the user and performed by the selective call receiver." The parties agree "mode" should be construed as "a method or condition of operation." The parties agree "displaying a first set of said plurality of function indicators associated with said message read mode and said message" should be construed as "displaying the function indicators associated with the read mode and the selected message where the read mode is automatically determined, and not user-selected." The parties agree "displaying a second set of said plurality of function indicators associated with said selective call receiver status mode" should be construed as "displaying a second set of function indicators associated with the status mode, where the status mode is automatically determined, nor user-selected." The parties agree "an apparatus for presenting a plurality of function indicators in a selective call receiver capable of receiving a message" should be construed as "an apparatus for presenting function indicators in a selective call receiver. A function indicator is a visual indicator on the display of the selective call receiver representing a 'function action' that may be selected by the user and performed by the selective call receiver." The parties agree "first means for displaying a first set of said plurality of function indicators associated with said message read mode and said message" should be construed as follows. The function is "to display the function indicators associated with the read mode and the selected message where the read mode is automatically determined, and not user-selected." The structure is "hardware displayed in Blocks 103 and 104 of Fig. 1 and the software represented by the flowchart of Fig. 2." The parties agree "second means for displaying a second set of said plurality of function indicators associated with said selective call receiver status mode" should be construed as follows. The function is "to display a second set of function indicators associated with the status mode, where the status mode is automatically determined, and not userselected." The structure is "hardware displayed in Blocks 103 and 104 of Fig. 1 and the software represented by the flowchart of Fig. 2." 3. The '140 Wong Patent From the '140 Patent, the parties agree "user-programmed call-back number" should be construed as "a phone number programmed by a user." The parties agree "non-volatile memory" should be construed as "a memory element that retains stored information even when not powered." 4. The '356 Patent From the '356 Patent, the parties agree "radio communication device" should be construed as "a device that receives and transmits radio signals." The parties agree "a predetermined plurality of graphical icons" should be construed as "more than one pre-stored graphical icon." The parties agree "user-programmable ringer" should be construed as "a ringer that produces a user-composed ring." 5. The '766 Patent

9 From the '766 Patent, the parties agree "user-coded ring parameters" should be construed as "parameters entered by the user to compose the ring. Examples of user-coded ring parameters include ringer tone, single pulse duration, number of pulses per group, pulse group duration, intergroup delay, and the intercycle delay." The parties agree "intergroup delay" should be construed as "the time between groups of pulses." The parties agree "pulse-group duration" should be construed as "the time duration of a group of pulses." The Court agrees with the parties' proposed constructions. The Court now considers the disputed claim terms. IV. Claim Construction Analysis A. The '391 Weitzen Patent 1. "Selective call receiver" (Claims 1 & 5) a. The Parties' Proposed Constructions Motorola's Proposal "A receiver that can respond to a radio signal communication that is specifically directed to it." VTech's Proposal "A pager." b. Discussion VTech argues the term "selective call receiver" should be limited to the preferred embodiment of the '391 patent, i.e., a pager. Motorola asserts this is improper, urging that Motorola's proposal comports with its plain and ordinary meaning to one of skill in the art. According to Motorola, a pager is one type of a selective call receiver, but there are many other examples, including cellular and cordless telephones. The '391 patent does not expressly define the term "selective call receiver." As noted by VTech, the brief specification of the '391 patent provides the following regarding a "selective call receiver." Figure 1, which contains a block diagram of a prior art selective call receiver, specifically refers to "pager circuitry." Under the section "Detailed Description Of The Invention" the patent states: "Referring to FIG. 1, pager circuitry " ('391, 1:63) (first emphasis added). The patent further states: "The selective call receiver shown in Fig. 1 is well known to those skilled in the art." ('391, 1:67-68) (emphasis added). According to VTech, the specification as well as the claim language, taken in context, describes the metes and bounds of the term selective call receiver as a pager. For instance, the claim language "plurality of function indicators in a selective call receiver capable of receiving a message" taken in conjunction with the disclosure in the specification shows that the term "message" in the context of the invention are messages

10 received by pagers. ('391, 3:1-3). VTech asserts the patent does not enable, disclose, or even mention, any other technology. The two instances where "pager circuitry" is used in the specification to describe prior art and the preferred embodiment do not necessarily limit a "selective call receiver" to a pager. The Court notes that subsequent to the ' 391 Weitzen Patent, Motorola eventually adopted the phrase "radio pagers" for "selective call receiver" in the '140 Wong patent. ('140, 1 :15-17). The Weitzen Patent was filed in September 5, 1989 without equating the two phrases. The Wong Patent was filed later in November 23, 1992 with the statement "Radio pagers (also known as selective call receivers) having a plurality of alerts are well known," defining the terms to be synonymous. Id. The Court is of the opinion Motorola did not initially limit selective call receivers to be only pagers. Around the time of the filing of the '391 Patent, the industry terminology for pagers and paging systems was not necessarily "selective call receivers." For example, the pager patent U.S. Patent No. 4,845,491 referencing the Motorola product PMR2000 and the POCSAG standard does not contain the terminology "selective call receivers." Also, Motorola offered its PMR2000 product line brochure as a prior reference in the '391 Patent. Motorola's brochure introduces its PMR 2000 paging system product as a "personal message receiver," but the brochure does not mention "selective call receiver." (Motorola PMR 2000 Personal Message Receiver Product Brochure, 1986). The brochure suggests there is a wide array of terminology related to pagers, but none necessarily equated to "selective call receiver." Similarly, the prosecution history does not limit a "selective call receiver" to a pager. VTech asserts that statements made in the prosecution history demonstrate the limited scope of the term "selective call receiver." On May 17, 1990, the Patent Office issued an office action rejecting Motorola's specification and claims based on non-enablement stating, inter alia, "[S]ince the Applicant does not show how to modify the prior art pager in order for it to accomplish the allegedly novel and unobvious functions, this specification is non-enabling." (VTech Ex. 10, pg. 30) (emphasis added). The Patent Office also stated that: "Although replete with functional language describing the display and selection, the specification must also comprise language describing how and through what means the pager performs the functions described in the flow diagram of figure 2, especially since the specification does not incorporate these hardware means by reference to a U.S. Patent..." (VTech Ex. 10, pg. 29) (emphasis added). According to VTech, in response to this rejection, Motorola submitted a "variety" of selective call receivers to demonstrate what hardware it was referring to in the specification, which Motorola argued "are well known to those of ordinary skill in the art," (VTech Ex. 10, pg. 38), and every reference Motorola submitted is directed to pagers. (VTech Ex. 10, pgs ). According to Motorola, the two exemplary references it submitted which were directed to pagers were intended to show how the preferred embodiment of a selective call receiver could be constructed. The Court further finds VTech's argument regarding "disclaimer" improper in this instance. Prosecution disclaimer only applies where a disclaimer was clear and unambiguous. See Omega Eng'g, Inc. v. Raytek Corp., 334 F.3d 1314, 1324 (Fed.Cir.2003). That is not the case here. VTech next cites to the claim construction order entered in a past Motorola litigation against Qualcomm in the Southern District of California, asserting Motorola should be estopped from arguing a different definition now during its current litigation. In 1997, Motorola brought an action against Qualcomm, Inc. ("Qualcomm") for infringement of numerous patents, including the '391 Weitzen patent. See Motorola, Inc. v. Qualcomm, Inc., Case No (S.D.CA.) ("Qualcomm litigation"). During the claim construction

11 proceedings, Motorola submitted to Qualcomm its claim construction statement, wherein it set forth its proposed interpretation of the preamble to claim 1 including the limitation "selective call receiver." In response, Qualcomm submitted its claim construction statement whereby it agreed to Motorola's proposed interpretation of the preamble of Claim 1. (VTech Ex. 12, pg. 2). Following this exchange, the parties submitted a joint claim construction statement to the Court. (VTech Ex. 13). This document included the statement: "The parties agree that the preamble [to Claim 1] refers to a method for presenting function indicators in a selective call receiver capable of receiving messages, i.e. a pager" (VTech Ex. 13, pg. 2) (emphasis added) In its claim construction opinion, the court stated that "[t]he ['391] patent seeks to simplify the method by which user of a selective call receiver, or pager, accesses features of the pager." (VTech Ex. 14, pg. 2) (emphasis added). The Court disagrees with VTech that Motorola is judicially estopped from arguing a different definition in this litigation. Motorola explains that the Qualcomm court's reference to "selective call receiver, or, pager" was a passing reference to an uncontested term. VTech's emphasis on this reference is insufficient to judicially estop Motorola from arguing its current position. The Qualcomm litigation involved allegations of infringement of the '391 patent by a number of Qualcomm cellular telephones. According to Motorola, the parties did not dispute the term "selective call receiver" for purposes of that litigation because they clearly felt that the term was broad enough to cover pagers or telephones. Finally, to the extent there is an enablement issue raised in the briefing, the Court finds the issue is more appropriately raised in the context of a motion for summary judgment. c. The Court's Construction Accordingly, the Court construes the term "selective call receiver" to mean: "A receiver that can respond to a radio signal communication that is specifically directed to it." 2. "Message" (Claims 1 & 5) a. The Parties' Proposed Constructions Motorola's Proposal Plain and ordinary meaning. Should the Court require a construction, "message" means "a communication." In the alternative, Motorola would be amenable to a construction of "information received by the selective call receiver." VTech's Proposal Requires construction. "Information received by the pager and entered by the sender of the page." b. Discussion According to Motorola, the term "message" is not a term that this Court needs to construe. A person of ordinary skill, reading the patent as a whole, (as well as a lay jury) would have a clear understanding of what this term means. Should the Court find that this term should not be given its plain and ordinary meaning, the present dispute is essentially whether that message must be "received by the pager and entered by the sender of the page," as VTech claims. The Court finds the term should be construed and agrees with Motorola that VTech's construction of the

12 term "message" is improperly limited to a specific way of creating a message, consistent with VTech's attempts to limit the "user-interface" patents to pagers. VTech provides no support for requiring this "message" be "entered by the sender of the page." Claims 1 and 5 of the '391 patent are directed to a method and apparatus for displaying messages within the selective call receiver. The Court declines to limit the language to a particular way of creating a message. c. The Court's construction The Court is of the opinion the term "message" should be construed as: "information received by the selective call receiver." 3. "message read mode" and "selective call receiver status mode" (Claims 1 & 5) a. The Parties' Proposed Constructions Motorola's Proposal (a) "message read mode" "A mode automatically entered by the selective call receiver if a message is present." (b) "selective call receiver status mode" "A mode in a selective call receiver that is selected automatically when no message is present." VTech's Proposal (a) "message read mode" "A mode in which a message entered by the sender is displayed." (b) "selective call receiver status mode" "A mode in which a message is not displayed." b. Discussion The principal dispute between the parties regarding the terms "message read mode" and "selective call receiver status mode" is whether the claimed selective call receiver transitions from one mode to the other when a message is either (a) present or (b) displayed. Motorola's constructions focus on the presence (or lack thereof) of a message. According to Motorola, the patent's specification and file history make clear that this is the critical distinction between the two modes. ('391, 2:4-9) ("When the user invokes the function menu,... the controller checks for the presence of at least one message 203. If no messages are present, the selective call receiver displays status mode function indicators 204.") (emphasis added); Fig. 2(203); Col. 2:17-27 ("If... at least one message has been received by the selective call receiver, when the user invokes the function menu,... The controller... determines which read mode function indicators are active...") (emphasis added); Fig. 2(203); Col 2:7 ("[P]resence of at least one message 203."); see also Ex. II (Paper 4 at 4) ("[T]he Applicant's operating mode is selected with respect to the function being executed..., thus requiring no manual user intervention"). As the intrinsic record indicates, the controller checks for the presence of a message and the receiver enters the selective call receiver status mode when no message is present. In contrast, VTech focuses on message display, rather than message presence, which Motorola asserts ignores the preferred embodiment. See Fig. 2; see also Col.2:4-9, Figure 2 of the '391 patent shows that the "Message Present? (203)" test is what determines whether the receiver is in the message read mode (message present = YES) or status mode (message present = NO). See Fig. 2(203). Obviously, a message may not be displayed during the status mode when no messages are present. The patent also makes clear,

13 however, that a message also may not be displayed in the message read mode if the user chooses not to read a message. See Fig. 2(209). While the Court agrees with Motorola's proposed construction, the Court is not convinced that the word "automatically" should be included because the disclosure suggests other conditions may be present. For example, a user may invoke or may have to invoke the function menu in conjunction with the message read mode. "When the user invokes the function menu... the controller checks for the presence of at least one message " ('391, 2:4-7). "If the controller is in the idle state 201 and at least one message has been received by the selective call receiver, when the user invokes the function menu,... " ('391, 2:17-19). In addition, a user may have a choice. "If the user does not choose to read the selected message 209,..." ('391, 2:33-34). Finally Fig. 2, element 209 suggests a choice. Therefore, with these other conditions, it is not necessarily automatic that the "message read mode" is entered. c. The Court's construction The Court is of the opinion the term "message read mode" should be construed as "a mode entered by the selective call receiver if a message is present." The Court construes "selective call receiver status mode" as "a mode in a selective call receiver that is selected when no message is present." B. The '140 Wong Patent The '140 patent describes a method and apparatus in a communication receiver for selecting and generating a unique and/or default audible alert ( e.g., a ring). The user stores in a phone's memory a phone number and associates a special alert with the stored number. When a communication with the same phone number is received and recognized, the stored associated "special" alert will be generated by the device. Moreover, if a received phone number does not match a phone number stored in memory, a default alert is generated. The parties dispute the meaning of ten claim limitations. According to VTech, five limitations ("receiver means," "storage means," "processor means," "audible alert generation means," and "first processor element") are written in "means-plus-function" format and should be interpreted pursuant to 35 U.S.C. s. 112, para. 6. Conversely, Motorola asserts the five terms are not "means-plus-function" terms governed by 35 U.S.C. s. 112, para. 6. (Docket Entry # 93 at A7-A11). Before reaching the specific terms at issue, the Court will first address the applicability of 35 U.S.C. s. 112, para. 6 in general. Then, in the separate discussion portions below, the Court will address any remaining disputes for each term. For each of the terms "receiver means," "storage means," "processor means," and "audible alert generation means," Motorola cites Allen Eng'g Corp. v. Bartell Indus., Inc., 299 F.3d 1336, 1348 (Fed.Cir.2002) for the proposition that even when the term "means" is utilized, 35 U.S.C. s. 112, para. 6 does not control if the term itself and surrounding claim limitations provide sufficient structure. (Docket Entry # 76 at 23-38). For the term "receiver means," Motorola asserts that the term "receiver" and the surrounding claim language which includes "processor means coupled to the receiver means" provides adequate structure such that s. 112, para. 6 does not apply. ( Id. at 23). For the term "storage means," Motorola asserts that the term itself and the surrounding claim language of "processor means... coupled to the storage means" and "the storage means comprises a non-volatile memory" provide sufficient structure. ( Id. at 24). For the term "processor means," Motorola asserts that the term itself and the surrounding claim language of "processor means coupled to the receiver means... coupled to the storage means" provide sufficient structure. ( Id. at 25). For the term "audible alert generation means," Motorola asserts that the term itself and the surrounding claims language of "coupled to the processor means" provide sufficient structure. Motorola further cites cases in

14 which district courts have found that "receiver means," "storage means," and "processor means" are not governed by s. 112, para. 6. (Docket Entry # 88 at 10-12). VTech counters that the use of means language creates a presumption that s. 112, para. 6 controls. VTech asserts that the claim terms in Allen Eng'g Corp. were laden with structure. (Docket Entry # 83 at 26-27). VTech asserts that the claim terms at issue are defined in a functional manner and that Motorola's surrounding structure is generally merely another means plus function term ( i.e., "processor means coupled to the receiver means"). (Docket Entry # 83 at 27). VTech asserts that the claim terms themselves do not provide any structure whatsoever and are exactly the type of generic claim language which invokes s. 112, para. 6. ( Id. at 31-32). This Court notes that the use of the word "means" triggers a presumption to "invoke the statutory mandate for means-plus-function clauses." Allen Eng'g Corp. v. Bartell Industries, Inc., 299 F.3d 1336, 1347 (Fed.Cir.2003). The Federal Circuit has stated that the presumption may be overcome in two ways: first, if the claim element recites no function corresponding to the means, and second, "even if the claim element specifies a function, if it also recites sufficient structure or material for performing that function, s. 112, para. 6 does not apply." Id. Here, the claim language in question is drafted in the means plus function format and the particular language is generalized language without the use of specific structural language. Under such circumstances, the Court shall construe the language to be subject to 35 U.S.C. s. 112, para. 6. See Apex Inc. v. Raritan Computer, Inc., 324 F.3d 1364, 1372 (Fed.Cir.2003); Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1361 (Fed.Cir.2000). As for Motorola's citation to the surrounding claim language, VTech accurately notes that such language often merely just recites the other means elements. The claim language of the terms in question does not rise to the level of that in Allen Eng'g Corp. so as to justify deviating from the presumption that s. 112, para. 6 governs. The Court finds that the terms receiver means, storage means, processor means, and audible alert generation means are means plus function terms governed by s. 112, para. 6. Motorola asserts that in contrast to the terms discussed above, the "first processor element" does not include the words "means for" and as such there is a presumption that s. 112, para. 6 does not apply. (Docket Entry # 76 at 29) ( citing TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., Nos , , 2008 WL at (Fed.Cir. June 18, 2008)). Further, Motorola asserts that the term "processor element" includes structure. (Docket Entry # 88 at 13). VTech counters that even if the word "means" is not utilized, when a word such as "element" is used with insufficient structure to perform the claimed function, thelimitation is still a means plus function limitation under s. 112, para. 6. (Docket Entry # 83 at 32-33) ( citing MAS-Hamilton Group v. LaGard, Inc., 156 F.3d 1206, (Fed.Cir.1988) ("lever moving element" subject to 35 U.S.C. s. 112, para. 6). VTech asserts that taken in context of the entirety of claim 1, "first processor element" does not contain sufficient structure. The parties acknowledge that a different presumption applies when the disputed claim term does not include "means." The lack of inclusion of "means" creates a presumption that s. 112, para. 6 does not apply. TIP Sys., LLC v. Phillips & Brooks/Gladwin, Inc., 529 F.3d 1364, (Fed.Cir.2008). The Court finds that VTech has not provided adequate justification overcoming the presumption that a term that does not include the "means" language is not controlled by s. 112, para. 6. The term in question recites a "processor element" which in light of the governing presumption the Court finds sufficiently definite such that s. 112, para. 6